Ex parte Ebine

Board of Patent Appeals and Interferences

Jan 15, 1999

08570894 (B.P.A.I. Jan. 15, 1999)

Application for patent filed December 12, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte AKEMI EBINE
__________
Appeal No. 98-2417
Application 08/570,8941
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 11. Claims 12 through 20, the
only other claims pending in the application, stand withdrawn
from further consideration under 37 CFR § 1.142(b).
Appeal No. 98-2417
Application 08/570,894
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Appellant's invention is directed to a container for
beverages and, more specifically, to a container having at
least two compartments therein. Independent claim 1 is
representative of the subject matter on appeal and a copy of
that claim, as reproduced from the Appendix to appellant’s
brief, is attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rudick et al. (Rudick) 4,784,678 Nov. 15,1988
Kim 5,492,244 Feb. 20,1996
(filed July 18, 1994)
Claims 1 through 11 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Rudick.
Claims 2 through 11 stand additionally rejected under 35
U.S.C. § 103 as being unpatentable over Rudick.
Claim 11 stands further rejected under 35 U.S.C. § 103 as
being unpatentable over Rudick in view of Kim.
Appeal No. 98-2417
Application 08/570,894
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Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the final rejection (Paper
No. 12, mailed June 20, 1997) and the examiner's answer (Paper
No. 18, mailed March 19, 1998) for the examiner's reasoning in
support of the rejections, and to appellant's brief (Paper No.
17, filed February 19, 1998) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
As a preliminary matter, we observe that the review
sought by appellant with regard to the first four issues
enumerated on pages 5 and 6 of the brief, respectively
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Application 08/570,894
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regarding 1) the premature finality of the Office action
mailed June 20, 1997, 2) the second restriction requirement
imposed by the examiner, 3) the withdrawal of claims 12
through 14 from further consideration, and 4) the refusal of
the examiner to consider the Supplemental Citation of
Information (Paper No. 11), relates to subject matter which is
reviewable by way of petition to the Commissioner and not by
appeal to this Board. Contrary to appellant’s apparent
understanding, this Board does not exercise any general
supervisory authority over the Examining Corps. Under 35
U.S.C. § 134 and 37 CFR § 1.191, appeals may be taken from the
decision of the primary examiner to reject claims. Issues
relating to an examiner's requirement for restriction,
finality of a rejection, and the other issues mentioned above
are reviewable by way of petition under 37 CFR § 1.181, not by
appeal
to this Board. See, e.g., In re Hengehold, 440 F.2d 1395,
1403, 169 USPQ 473, 479 (CCPA 1971).

Looking now to the examiner's prior art rejection of
claims 1 through 11 under 35 U.S.C. § 102(b), we are in full
Appeal No. 98-2417
Application 08/570,894
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agreement with the examiner’s position as set forth on pages 4
and 5 of the answer regarding claims 1 through 10 on appeal,
but we do not agree with the examiner’s position on page 6 of
the answer with respect to claim 11 on appeal.
An anticipation under 35 U.S.C. § 102(b) is established
when a single prior art reference discloses, either expressly
or under principles of inherency, each and every element of a
claimed invention. See RCA Corp. v. Applied Digital Data Sys.
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
The law of anticipation does not require that the reference
teach what the appellant is teaching or has disclosed, but
only that the claim or claims on appeal "read on" something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference. See Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983),
cert. denied, 465 U.S. 1026 (1984).
Like the examiner, we find that Rudick discloses a
beverage container or apparatus (Fig. 1) which comprises an
outer body (11) providing a first compartment and an inner
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body (14) providing a second compartment positioned internally
within the first compartment. The space between the inner
body/second compartment (14) and the outer body (11) of the
apparatus defines a first enclosure within which liquid may be
contained, while the second compartment (14) defines a second
enclosure. The first compartment includes an openable liquid
dispensing opening (at 19) which selectively permits access to
the first enclosure, while the second compartment has an
opening provided with an openable closure means (13) to
selectively permit access into the second enclosure. As can
be clearly seen in Figure 1 of Rudick, the second enclosure is
not in communication with the first enclosure. Thus, we find
that Rudick does disclose each and every element set forth in
appellant’s claim 1 on appeal. Moreover, it is our opinion
that the apparatus of Rudick is fully capable of functioning
in the manner set forth in the preamble of appellant’s claim 1
"for containing a removable liquid and a removable product,
article, prize, or object." In this regard, we observe that
the first enclosure of Rudick does contain a liquid beverage
therein, while the second enclosure clearly provides a space
between the closure means (13) and the rolling diaphragm (18)
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within which a product, article, prize, or object "may be
removably contained." The recitation in claim 1 with respect
to the apparatus being "for containing a removable liquid and
a removable product, article, prize, or object," is merely a
statement of purpose or intended use and is thus not effective
to distinguish appellant's claimed apparatus/container from
that of Rudick. See In re Pearson, 494 F.2d 1399, 1403, 181
USPQ 641, 644 (CCPA 1074); In re Casey, 370 F.2d 576, 580, 152
USPQ 235, 238 (CCPA 1967); and In re Sinex, 309 F.2d 488, 492,
135 USPQ 302, 305 (CCPA 1962). For the above reasons, the
examiner’s rejection of claim 1 on appeal will be sustained.
As to claim 2, we observe that when the closure means
(13) is removed from the opening of the second compartment
(14) in Rudick Figure 1, the second enclosure, at least in the
area above the rolling diaphragm (18), will have "unobstructed
communication with an atmosphere exterior to said apparatus
without necessarily requiring opening of said liquid
dispensing opening." In this regard, we note that claim 2
does not necessarily require that the entirety of the second
enclosure must have "unobstructed communication with an
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Application 08/570,894
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atmosphere exterior to said apparatus."
Regarding dependent claims 3 through 9, we note that
appellant has indicated on page 7 of the brief that the claims
on appeal "do not stand or fall together," however, we find no
separate arguments in the brief addressing the limitations of
claims 3 through 9. Accordingly, under 37 CFR § 1.192(c)(7)
and (c)(8)(iii), we conclude that these claims in fact stand
or fall with claims 1 and 2 from which they depend. Moreover,
since we agree with the examiner that the elements of the
apparatus set forth in claims 3 through 9 on appeal are found
in the container of Rudick Figure 1, and appellant has not
argued otherwise, it follows that we would sustain the
rejection of these claims under 35 U.S.C. § 102(b) in any
event.
Claim 10 on appeal sets forth that the rupturing or
breaking means for permitting selective access to the first
enclosure and opening of the liquid dispensing opening
"comprises a pull tab," with the pull tab being pivotably
secured to the planar flange of the second compartment that
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Application 08/570,894
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forms the top of the container. As is apparent from Rudick,
the container therein includes opening means (19) that
utilizes a pull tab pivotably secured to the planar flange of
the second compartment that forms the top of the container.
The pivoting movement of the pull tab in Rudick is
that expected of a conventional pull tab, wherein one end of
the tab may be lifted upwardly and pivoted away from the top
of the container, while the other end is pressed downwardly to
force open the breakable seal that defines the openable liquid
dispensing opening. Thus, we will sustain the examiner’s
rejection of claim 10 under 35 U.S.C. § 102(b) as being
anticipated by Rudick.
We will not sustain the examiner’s rejection of claim 11
under 35 U.S.C. § 102(b) as being anticipated by Rudick.
Claim 11 addresses the capability of the pull tab to pivot
between the position seen in Figure 3 of the drawings and the
position seen in Figure 4 of the drawings. When positioned as
in Figure 3, the pull tab closes or "at least partially
obstructs" the opening to the second enclosure, while after
being pivoted upwardly as in Figure 3 of the drawings, the
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Application 08/570,894
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pull tab clearly does not obstruct the opening to the second
enclosure. This pivoting movement of the pull tab thus
permits selective access into the second enclosure. The
examiner’s position as explained on page 6 of the answer that,
when in the horizontal position, the pull tab "can be pivoted
to extend radially inwardly to obstruct the second
opening," is based on total speculation and seems to mistake
rotation of the pull tab in a horizontal plane for pivoting of
the pull tab as discussed above, which it is not.
With regard to the examiner’s rejection of claims 2
through 11 under 35 U.S.C. § 103 as being unpatentable over
Rudick, we do not agree with the examiner that it would have
been obvious to one of ordinary skill in the art to remove the
diaphragm and the separator from the second compartment of
Rudick, while retaining the second compartment for holding a
removable product, prize or object, since such a modification
of the reference would clearly destroy the Rudick reference
for its intended purpose of providing a self-cooling
container. While it is true that in In re Karlson, 311 F.2d
581, 584, 136 USPQ 184, 186 (CCPA 1963) the Court stated that
Appeal No. 98-2417
Application 08/570,894
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omission of an element and its function in a combination
is an obvious expedient if the remaining elements
perform the same functions as before,
we observe that the Court has also recognized that this is not
a mechanical rule, and that such language in Karlson was not
intended to short circuit the determination of obviousness
mandated by 35 U.S.C. § 103. See In re Wright, 343 F.2d 761,
769-70, 145 USPQ 182, 190 (CCPA 1965). Thus, as in reviewing
any obviousness determination, we must first look to the prior
art and ascertain whether the prior art teachings would appear
to be sufficient to one of ordinary skill in the art to
suggest making the claimed substitution or other modification
proposed by the examiner. See, e.g., In re Lalu, 747 F.2d 703,
705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
In this particular case, we share appellant's view that
the examiner's modification of Rudick in the specific manner
posited in the final rejection and examiner’s answer is based
on the hindsight benefit of appellant's own teachings and not
on anything fairly suggested by the reference itself.
Moreover, as we noted above, the critical nature of the
diaphragm, separator, etc. within the second compartment of
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Application 08/570,894
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Rudick to the invention in the Rudick patent clearly dictates
against any such removal, and if the structure within the
second compartment were removed, the very nature of the
container therein would be altered to the extent that such
container would not be capable of performing the same function
as before. Thus, we will not sustain the examiner's rejection
of claims 2 through 11 under 35 U.S.C. § 103 based on Rudick.
We will likewise not sustain the examiner’s rejection of
claim 11 under 35 U.S.C. § 103 as being unpatentable over
Rudick in view of Kim. It is again our opinion that the
examiner's
modification of Rudick in the specific manner posited in the
final rejection and examiner’s answer is based on the
hindsight benefit of appellant's own teachings and not on
anything fairly suggested by the applied references.
In summary, only the decision of the examiner rejecting
claims 1 through 10 under 35 U.S.C. § 102(b) as being
anticipated by Rudick is affirmed. All the other rejections
before us on appeal have been reversed. Thus, the decision of
the examiner is affirmed-in-part.
Appeal No. 98-2417
Application 08/570,894
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 98-2417
Application 08/570,894
14
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/pgg
James R. Vance
Vance & Romero
Pacific First Plaza
155 108th Avenue NE Suite 202
Bellevue WA 98004
Appeal No. 98-2417
Application 08/570,894
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APPENDIX
1. An apparatus for containing a removable liquid and a
removable product, article, prize, or object, said apparatus
comprising:
(a) a first compartment defining a first enclosure within
which the liquid may be contained or dispensed, said first
compartment having an openable liquid dispensing
opening which selectively permits access to said first
enclosure; and
(b) a second compartment defining a second enclosure within
which the product, article, prize, or object may be
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removably contained, said second compartment being
positioned internally within said first compartment, said
second enclosure not communicating with said first
enclosure, said second compartment having an opening which
selectively permits access into said second enclosure.